Understanding the 2023 Amendments to Japan's Design Law: Exceptions to Novelty Loss

In the competitive global marketplace, securing robust intellectual property rights is paramount. For businesses operating in or exporting to Japan, understanding the nuances of its design protection system is crucial. Japanese Design Law, like that of many other jurisdictions, requires a design to be novel to be registrable. However, commercial realities often necessitate some form of design disclosure before a formal application can be filed—be it through market testing, presentations to potential investors, or online product reveals. Recognizing this, Japanese Design Law provides for "exceptions to the loss of novelty" (新規性喪失の例外 - shinkisei sōshitsu no reigai). Recent amendments in 2023, which came into effect on January 1, 2024, have notably streamlined the procedures for claiming these exceptions, particularly for disclosures made by the rights holder. This article delves into these provisions and the practical implications of the latest reforms for businesses.

The Cornerstone of Design Protection: Novelty

Under Japan's Design Act (意匠法 - Ishōhō), a design must be novel to qualify for registration (Article 3(1)). This means that, as a general rule, if a design has been publicly known in Japan or a foreign country, described in a distributed publication, or made publicly available through electric telecommunication lines (e.g., the internet) before the filing of the design application, it cannot be registered. This provision ensures that design rights are granted only for genuinely new creations.

Furthermore, even if a design is novel, it may still be refused registration if it could have been easily created by a person ordinarily skilled in the art to which the design pertains, based on publicly known shapes, patterns, colors, or any combination thereof (Article 3(2) - creative non-obviousness). While distinct from novelty, the prior art considered for this assessment is often related to what has been publicly disclosed.

The Rationale for Exceptions: Balancing Protection and Commercial Practice

Strict adherence to the novelty principle without any flexibility could unduly penalize designers and businesses. Modern product development and marketing often involve early-stage disclosures. For instance:

• Presenting a new design at a trade exhibition.
• Launching a product through an e-commerce platform.
• Utilizing social media for promotional activities.
• Seeking funding through crowdfunding platforms where design details are shared.

Without exceptions, such activities could inadvertently destroy the novelty of a design before an application is filed. The exceptions to the loss of novelty aim to mitigate this risk, providing a "grace period" during which such disclosures do not bar subsequent design registration, provided certain conditions are met.

Japanese Design Law (Article 4) broadly categorizes these exceptions into two main types:

1. Disclosure Against the Will of the Rights Holder (Article 4(1)): This applies when a design is made public contrary to the intentions of the person entitled to obtain the design registration (e.g., through industrial espionage or a breach of a non-disclosure agreement).
2. Disclosure Resulting from an Act of the Rights Holder (Article 4(2)): This is the more commonly invoked exception and covers disclosures made by the rights holder themselves or with their consent. This could be through testing the market, advertising, academic presentations, or exhibiting the design.

For both categories, a crucial condition is that the design application must be filed within one year from the date the design was first made public.

The Reiwa 5 (2023) Amendment: A Focus on Procedural Simplification

Before the 2023 amendment, a significant procedural burden existed for applicants who had made multiple disclosures of the same or similar designs. Often, each instance of public disclosure that could potentially negate novelty had to be individually proven and documented when claiming the exception. This was particularly cumbersome in today's fast-paced digital environment where a product might be revealed on multiple platforms or in various iterations over a short period.

The primary objective of the 2023 Design Law amendment, specifically concerning the exceptions to loss of novelty, was to alleviate this procedural load for applicants.

The Core Change: Article 4, Paragraph 3 Proviso

The most significant change introduced by the amendment is the new proviso to Article 4, Paragraph 3 of the Design Act. This proviso stipulates that if the person entitled to obtain a design registration has made two or more disclosures leading to the design becoming public (under Article 3(1)(i) or (ii)), the submission of a certificate proving the facts of disclosure is now sufficient if it pertains to any one of the disclosures made on the earliest date.

In simpler terms, if a company discloses a new design on its website on Day 1, then at a trade show on Day 10, and then in an online advertisement on Day 20, it no longer needs to submit separate proofs for each of these events. Proof related to one of the Day 1 disclosures (assuming there were multiple on that earliest day, the applicant can choose one) can cover the subsequent disclosures, provided the designs are identical or similar.

What Does This Mean in Practice?

• Reduced Paperwork: Applicants can significantly reduce the amount of documentation required.
• Focus on the First Salvo: The emphasis is on proving the circumstances of the initial set of disclosures.
• Coverage for Similar Designs: The procedural simplification extends to subsequent disclosures of designs that are not only identical but also similar to the design whose earliest disclosure is proven.

Remaining Procedural Requirements

Despite this relaxation, applicants must still adhere to certain procedures:

1. Statement of Intent: The design application itself must include a statement that the applicant wishes to claim the benefit of the exception to novelty loss. This must be filed simultaneously with the design application.
2. Certificate Submission: A certificate (証明書 - shōmeisho) detailing the facts of the relevant earliest public disclosure (e.g., date, manner of disclosure, the design disclosed) must be submitted to the Japan Patent Office (JPO) within 30 days from the design application filing date.

The Crucial Aspect of "Similarity"

The benefit of the simplified procedure – where one proven earliest disclosure covers subsequent ones – hinges on the subsequent disclosures being of designs that are identical or similar to the design covered by the initial proof.

According to JPO guidelines and explanations, the standard for determining "similarity" in this context is generally the same as that used for assessing design similarity for novelty (Article 3(1)(iii)) and for determining the scope of a design right (Article 23). This means that if a company discloses Design A on Day 1 (and submits proof for it), and then discloses Design B on Day 30, the simplified procedure covers Design B only if Design B is considered "similar" to Design A under standard Japanese design law principles. If Design B is deemed non-similar, a separate application for the exception, with its own proof relating to Design B's disclosure, would be necessary if Design B itself is to be protected.

This underscores the importance of carefully assessing the scope of similarity when relying on this new provision.

Scope and Nuances of the Exceptions: Beyond the Basics

While the 2023 amendment brings welcome procedural relief, businesses must be aware of certain underlying complexities regarding the scope of these exceptions.

1. "Designs" vs. Mere "Shapes, Patterns, or Colors"

A critical point, often highlighted in legal commentary, is the distinction between a "design" as defined by the Act (relating to an article, building, or image, and evoking an aesthetic impression) and mere constituent elements like shapes, patterns, or colors in isolation.

Article 4 provides an exception for a "design" that has become public. If, for example, a company discloses a unique shape that, by itself, does not yet constitute a complete "design" (e.g., it's not yet tied to a specific article or its function/aesthetic role isn't fully defined), and later files an application for a full design incorporating this shape, a question arises: Does the exception cover the initial disclosure of the shape?

The prevailing interpretation suggests that the exception primarily saves the disclosed design from being invalidated under Article 3(1)(i) (publicly known) or Article 3(1)(ii) (published/online). However, if the initially disclosed element (the shape) is considered prior art, the subsequently filed full design might still be challenged under Article 3(2) for lacking creative non-obviousness over that disclosed shape. The exception under Article 4 might not prevent the disclosed shape itself from being cited as a basis for an Article 3(2) rejection if the shape itself was not a "design" at the time of its disclosure. This is a nuanced area requiring careful consideration, especially during early-stage product development and component showcasing.

2. Parts and Partial Designs

Modern products are often complex, and companies may wish to protect not only the overall design of a product but also specific parts or portions of it (Partial Designs - 部分意匠 bubun ishō). If a complete product design is disclosed and subsequently benefits from the exception to novelty loss, how does this affect later applications for designs of its individual parts?

The general understanding, supported by commentary, is that if the overall design is deemed not to have lost novelty due to the exception, then the constituent parts or partial designs that were inherently disclosed as part of that overall design would also benefit from the exception. This means that if a company discloses a new car design (and properly claims the exception), and later files a separate application for the design of its headlight (which was clearly visible in the initial car disclosure), the initial disclosure of the car should not prejudice the novelty of the headlight design application.

3. The Role of Third-Party Disclosures

The exceptions under Article 4 are primarily for disclosures by the rights holder or those made against their will. What if a third party independently creates and discloses an identical or similar design before the applicant files? In such a case, the exception generally does not help; the design would lack novelty.

However, the situation is different if a third party's disclosure is a direct consequence of the rights holder's own initial disclosure. For instance:

• A journalist publishes an article with images of a product after attending a launch event hosted by the rights holder.
• An online retailer lists a product for sale after receiving it from the rights holder (who made the initial disclosure by, for example, supplying it to the retailer).
• A social media user posts images of a product they purchased after its initial release by the rights holder.

In such cases, where the third-party disclosure is clearly linked to and derived from the rights holder's own act of making the design public, these subsequent third-party disclosures can also be covered by the exception claimed by the rights holder for their initial act. The key is the chain of events originating from the rights holder's disclosure.

Strategic Disclosures and Application Filing

The one-year grace period and the simplified procedures offer valuable flexibility. However, they should not be seen as a reason to delay filing design applications. Best practices include:

• Meticulous Record-Keeping: Maintain detailed records of all disclosures – dates, locations (URLs, exhibition names), content shown, and to whom. This is crucial for providing accurate information in the certificate if an exception is claimed.
• Early Filing is Still Gold: Whenever possible, file a design application before any public disclosure. This remains the safest way to secure rights and avoid the complexities and potential risks associated with relying on novelty loss exceptions.
• Paris Convention Priority: U.S. businesses can utilize the Paris Convention to claim priority from an earlier U.S. design patent application when filing in Japan, provided the Japanese application is filed within six months of the U.S. filing. Disclosures made after the U.S. priority date but before the Japanese filing date might still need to be considered under Japan's novelty loss exception rules if they occurred before the Japanese application was effectively filed or if relying solely on the Japanese filing.
• Professional Advice: The nuances of Japanese Design Law, especially concerning what constitutes a "design," "similarity," and the precise requirements for the certificate, necessitate consultation with a Japanese patent attorney (benrishi). They can provide tailored advice on disclosure strategies and ensure compliance with all procedural requirements.

The Path Forward

The 2023 amendments to Japan's Design Law concerning exceptions to the loss of novelty represent a positive step towards reducing the administrative burden on applicants. By allowing a single, earliest disclosure proof to cover subsequent identical or similar disclosures by the rights holder, the system has become more aligned with modern business practices involving phased rollouts and multi-platform marketing.

However, the fundamental requirements for novelty and the creative non-obviousness of designs remain firmly in place. Businesses, especially those from the U.S. looking to protect their valuable designs in the Japanese market, should view these exceptions as a safety net rather than a standard operational procedure. A proactive approach, involving careful management of disclosures and timely application filing, supported by expert local advice, continues to be the most effective strategy for robust design protection in Japan. Ongoing discussions within bodies like the JPO's working groups on examination standards suggest that further refinements or clarifications may emerge, making it important to stay updated on developments in this area.